Ex Parte Knight

Patent Trial and Appeal Board

Dec 8, 2014

10861849 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/861,849 06/07/2004 Andrew F. Knight 020 2823
42067 7590 12/09/2014
Andrew Knight
1 Walnut Street
Lewiston, ME 04240
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
12/09/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW F. KNIGHT
____________

Appeal 2011-011104
Application 10/861,8491
Technology Center 3700
____________

Before EDWARD A. BROWN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Andrew F. Knight (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–61. We have jurisdiction under
35 U.S.C. § 6(b).

1 Appellant is identified as the real party in interest. Appeal Br. 1.
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Claimed Subject Matter
Claims 1, 20, 34, and 48 are the independent claims on appeal.
Claim 1 is illustrative of the claimed subject matter and is reproduced below.
1. A process of relaying a story having a timeline and a
unique plot involving characters, comprising:
indicating that a first character voluntarily enters a virtual
reality;
indicating a belief by said first character that said first
character is not in virtual reality; and
indicating that an interaction in virtual reality between
said first character and a second character, while said first
character has said belief, causes said first character to labor for,
at most, a compensation substantially lower than a market value
of said first character’s labor.
Appeal Br. 78, Claims App.
Reference
The Examiner relies upon the following prior art reference:
Any movie recorded on a DVD or any story printed in a book. Ans. 4.
Rejections
Appellant seeks review of the following rejections:
I. Claims 1–61 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter and
II. Claims 1–612 are rejected under 35 U.S.C. § 103(a) as
unpatentable over any movie recorded on a book or DVD.

2 The Final Rejection includes a rejection of claims 16–18, 30–32, 44–
46, and 59–61 under this ground. Final Office Action (mailed Aug. 25,
2008) at 2 (incorporating the rejections from the April 8, 2008, Office
Action, which include a rejection of these claims under this ground).

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SUMMARY OF DECISION
We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) against claims 1–61 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We AFFIRM the Examiner’s rejection of claims 1–61 under
35 U.S.C. § 101. We designate our affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
We REVERSE, pro forma, the Examiner’s rejection of claims 1–61
under 35 U.S.C. § 103(a).
OPINION
New Ground of Rejection – Indefiniteness
We enter a new ground of rejection of claims 1–61 under 35 U.S.C.
§ 112, second paragraph, because the term “indicating” as recited in each
independent claim on appeal is indefinite for failing to “particularly point
out and distinctly claim[] the subject matter which applicant regards as his
invention.” 35 U.S.C. § 112, second paragraph.
We interpret the claim language, where necessary, giving the claims
their broadest reasonable interpretation in light of the Specification.
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). The ordinary and
customary meaning of “indicate” is “to point out or show.” CHAMBERS 21ST
CENTURY DICTIONARY (2001), available at
http://search.credoreference.com/content/entry/chambdict/indicate/0?
searchId=02992c9c-0dfc-11e4-8ccb-0aea1e3b2a47&result=0 (last visited

Claims 1–15, 19–29, 21–43, and 47–58 are rejected under this ground as part
of a new ground of rejection in the Examiner’s Answer. Ans. 3–4.
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Oct. 10, 2014). In the context of claim 1, for example, the first step is thus
interpreted as “pointing out or showing that a first character voluntarily
enters a virtual reality.” Although at first glance, “indicating” may not
appear indefinite, Appellant’s Specification reveals the difficulty underlying
the interpretation of the term in the context of the present application:
As well known by those of ordinary skill in the art, there are
many ways to indicate a fact in a movie without any explicit
words to that effect at all: circumstance, cinematography, subtly
suggestive newspaper headlines, suggestive words by the
protagonist or other characters, etc., can all be indicative of that
fact.
Spec. 59 (emphasis added). As reflected in Appellant’s Specification, the
claim language “a first character voluntarily enters a virtual reality” can be
indicated “without any explicit words to that effect.” Id. Thus, while
explicit words may indicate the recited actions of the first character, so too
may “circumstance” and “cinematography,” in which explicit words to that
effect are not used.
In our view, Appellant’s Specification expands upon how the
“indicating” steps of the claim may be performed to such an extent where
there is “no objective definition identifying a standard for determining
when” a method of relaying a story actually “indicat[es]” a certain fact (e.g.,
“that a first character voluntarily enters a virtual reality” as recited in
claim 1). See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350 (Fed. Cir. 2005), abrogated by, Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120 (2014);3 Interval Licensing LLC v. AOL, Inc., 2014 WL

3 While the Supreme Court in Nautilus disagreed with the standard for
determining indefiniteness as applied by the U.S. Court of Appeals for the

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4435871, at *5 (Fed. Cir. Sept. 10, 2014) (“Although absolute or
mathematical precision is not required, it is not enough . . . to identify some
standard for measuring the scope of the phrase. . . . [Rather, t]he claims,
when read in light of the specification and prosecution history, must provide
objective boundaries for those of skill in the art.”) (citations and quotations
omitted). We find the discussion in Datamize analogous to the
circumstances here.4
As in Datamize, whether a person performing the claimed method has
“indicated” a certain fact solely depends upon the subjective opinion of the
person purportedly practicing the invention. See Datamize, 417 F.3d at 1350
(citing In re Musgrave, 431 F.2d 882, 893 (CCPA 1970)). Additionally,
there is no objective way to determine whether that person succeeded in

Federal Circuit in Datamize, the Court did not suggest any disagreement
with the holding in Datamize that a completely subjective construction of a
term renders the term indefinite. See generally Nautilus, 134 S. Ct. 2120.
Although in the context of litigation based on an issued patent, the standard
enunciated in Nautilus for determining definiteness—whether a patent’s
claims “viewed in light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention with reasonable
certainty” (id. at 2129)—is arguably less of a hurdle to establishing
indefiniteness than the “insolubly ambiguous” standard applied in Datamize.
Thus, we have no reason to suspect that, had the analysis in Datamize been
performed under the “reasonable certainty” standard, the Federal Circuit
would have reached a different result.
4 In addition to our discussion herein, we recognize that, in Datamize,
the Federal Circuit agreed with the district court construction that the
ordinary meaning of “aesthetically pleasing” “includes ‘having beauty that
gives pleasure or enjoyment’ or, in other words, ‘beautiful[,]’” but
concluded that the phrase was indefinite. 417 F.3d at 1348.
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“indicating” a certain fact.5 In other words, the public would not be notified
“of the patentee’s right to exclude since the meaning of the claim language
would depend on the unpredictable vagaries of any one person’s opinion of”
whether a certain fact was indicated. Id. “[A] claim term, to be definite,
requires an objective anchor.” Id. Here, we have none.
Ultimately, our conclusion rests upon the finding that the term
“indicating” in the context of the claims “fails to delineate the scope of the
invention using language that adequately notifies the public of the patentee’s
right to exclude.” Id. at 1353. In the context of the claims and
Specification, “indicating” is not clear and unambiguous or “reasonabl[y]
precis[e].” See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“The
USPTO, in examining an application, is obliged to test the claims for
reasonable precision according to these principles.”).6
Accordingly, we conclude that claims 1–61 are indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention. 35 U.S.C. § 112, second paragraph.

5 Another possibility is to ask whomever the fact was intended to be
relayed to whether the fact was actually indicated or not. This approach,
however, merely results in the subjective opinion of the individual to whom
the story was intended to be relayed.
6 This decision should not be read as concluding that the term
“indicating” is indefinite in each and every context. Our conclusion is based
on the specific use of the term in the claims on appeal and discussion of the
term in the Specification.
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Rejection I
The Examiner concludes that claims 1–61 are directed to a non-
statutory abstract idea and hence ineligible subject matter for patenting
under 35 U.S.C. § 101. Ans. 4–5. The Examiner initially relies upon a
variety of reasons as to why the claims are directed to ineligible subject
matter, but narrows the focus in the Answer to the analysis provided by the
Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), which was
decided while the briefing in this appeal was ongoing. In particular, the
Examiner determines that “[i]n many ways, [a storyline] is analogous to a
mathematical algorithm. . . . [i]t is an abstract idea -- the notion behind the
story. And any number of stories can be built using the same storyline.”
Id. at 20. The Examiner concludes that claims 1–61 “seek[] to preempt the
entire field for stories following the plot outlined in [the] claims.” Id. at 21.
Appellant raises several arguments in response to this rejection, but
we focus on the Reply Brief because the arguments directed to Bilski are
provided therein. In particular, Appellant asserts that “[f]or all intents and
purposes, the Bilski opinion is useless.” Reply Br. 6. Appellant explains
that the Supreme Court held that “the Federal Circuit’s machine-or-
transformation test is a test but not the test.” Id. Further, Appellant
contends that “the Supreme Court’s explanation of why Appellant’s claims
are unpatentable abstract ideas is vacuous.” Id. Appellant asserts that the
concurring opinion in Bilski supports the notion that the “the legal construct
of ‘abstract idea’ is directly associated with mathematical algorithms.” Id.
Thus, according to Appellant, because “[a] fictional storyline is not a
mathematical algorithm[,] the claimed methods in the present application are
not abstract ideas.” Id.
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Appellant argues the eligibility of the claims in specific groups and
we address each group below after discussing the current legal framework
for assessing whether a claim is directed to patent eligible subject matter.
Section 101 of the Patent Act defines the subject matter eligible for
patent protection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
2354 (2014). It provides: “Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.” 35 U.S.C. § 101. The Supreme
Court’s “precedents provide three specific exceptions to § 101’s broad
patent-eligibility principles: ‘laws of nature, physical phenomena, and
abstract ideas.’” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting
Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). “Phenomena of
nature, though just discovered, mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.” Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1293 (2012) (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the
Supreme Court set forth a “framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct.
at 2355. As reiterated by the Supreme Court in Alice Corp:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[w]hat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
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individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. We have described
step two of this analysis as a search for an “inventive
concept”—i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
Id. (citations omitted).
Claims 1–15, 19–29, 33–43, and 47–587
First, claim 1 is directed to a process for relaying8 a story and recites
three “indicating” steps.9 Thus, the claim is directed to the abstract idea of

7 Appellant does not separately argue claims 1–15, 19–29, 33–43, and
47–58. Appeal Br. 5–47; Reply Br. 5–7. We select claim 1 as
representative. Accordingly, claims 2–15, 19–29, 33–43, and 47–58 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
8 The ordinary and customary meaning of “relaying” is “receiv[ing] and
pass[ing] on.” CHAMBERS 21ST CENTURY DICTIONARY (2001), available at
http://search.credoreference.com/content/entry/chambdict/relay_1/0?searchI
d=945a6d93-0e89-11e4-80fa-0aea1e24c1ac&result=0 (last visited July 18,
2014). In the context of the claims and Specification, however, the term
appears more analogous to “passing on” rather than requiring receiving and
passing on. Thus, the process of telling someone a story (which passes on a
story, whether or not that person telling the story received the story from
another or created the story) would fall within the scope of relaying a story
as understood in the context of the claims and Specification.
9 Although we conclude in the new ground of rejection that the term
“indicating” is indefinite, that conclusion does not preclude us from reaching
the question of whether the claims are directed to non-statutory subject
matter under § 101 because we focus our analysis here on the narrow context
where the elements of the story relayed are explicitly written or spoken.
Even in that narrow, arguably more definite (i.e., explicitly writing is more
definite than using “circumstance” to indicate a particular fact of a story),
context, we conclude that claim 1 is directed to non-statutory subject matter

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relaying (passing on, e.g., such as by telling) a story.10 In determining the
first step of this analysis, we are not persuaded by Appellant’s argument that
abstract ideas are limited to mathematical algorithms. See Alice Corp., 134
S. Ct. at 2356–57 (rejecting Petitioner’s argument that the abstract-ideas
category is confined to preexisting, fundamental truth[s] that exis[t] in
principle apart from any human action (citations and quotations omitted;
alterations in original)).
Second, the elements of claim 1, individually and “as an ordered
combination[,]” do not transform the nature of the claim into a patent-
eligible application. While claim 1 includes steps “indicating” certain
elements of the story, the steps are insufficient “to ensure that the patent
[application] in practice amounts to significantly more than a patent upon the
[ineligible concept] [of relaying a story] itself.” Id. at 2355 (second
alteration in original). In other words, there is no “inventive concept.” Id.
Additionally, each of claim 1’s method steps “can be performed in the
human mind, or by a human using a pen and paper.” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (relying on the
Supreme Court’s decision in Gottschalk v. Benson, 409 U.S. 63, 67 (1972),
for the proposition that “methods which can be performed mentally, or

for the reasons explained herein.
10 Storytelling is similar to an example given by the Federal Circuit in
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (2013), vacated,
WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014). In
Ultramercial, the Federal Circuit indicated that while “the word poem is
concrete, poetry is [abstract].” Id. at 1343. Specifically, as applied here,
while the word story may be concrete, storytelling (i.e., relaying a story) is
abstract.
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which are the equivalent of human mental work, are unpatentable abstract
ideas”). For example, the first “indicating” step can be performed either in
the human mind, or by a human writing down that a first character
voluntarily enters a virtual reality.11 The same is true of the second and third
“indicating” steps. Thus, in light of the analysis explained in Alice Corp.
and CyberSource, claim 1 is not directed to patent-eligible subject matter at
least because it is a mental process and hence an abstract idea.
Further, the Supreme Court recognized that, although not the sole test,
the “machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101.” Bilski, 130 S. Ct. at 3227. Here, claim 1 is not tied
to a particular machine or apparatus and does not transform a particular

11 Appellant has not argued that the preamble is limiting, and we do not
believe it is. That being said, even if it were limiting, “relaying a story” can
also be performed by a human writing down a story and giving it to another
human.
Appellant, however, contends that “indicating” is “an active step that
is not a ‘process of human thinking’ and does not ‘depend . . . on human
intelligence alone.’” Appeal Br. 37 (citing In re Comiskey, 499 F.3d 1365,
1377–78 (Fed. Cir. 2007)). As noted above, Appellant’s Specification
states, “there are many ways to indicate a fact in a movie without any
explicit words to that effect at all: circumstance, cinematography, subtly
suggestive newspaper headlines, suggestive words by the protagonist or
other characters, etc. can all be indicative of that fact.” Spec. 59. The
Specification also states that “[t]he present invention . . . applies to any
product of these processes—e.g., a book containing written information of a
story having the present plot.” Id. at 60. Thus, as with “step (b)” of
CyberSource, which the Federal Circuit determined could be performed by a
person “writing down a list of credit card transactions made from a
particular IP address,” 654 F.3d at 1372, so too could the “indicating” steps
of claim 1 be performed by writing.
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article into a different state or thing. Id. at 3226 (citation omitted); see also
Digitech Image Techs. v. Elecs. for Imaging, Inc., slip op. at 11
(Fed. Cir. July 11, 2014) (finding the method claims directed to an abstract
idea in-part because they are “not tied to a specific structure or machine”).
In addition, storytelling is not a “new and unforeseen invention” or an
“emerging technolog[y]” that poses a difficulty in deciding whether the
claim qualifies as a patentable “process.” Bilski, 130 S. Ct. at 3227–28.
Thus, the machine-or-transformation test provides further support for our
conclusion that claim 1 is directed to non-statutory subject matter.
Accordingly, we sustain the Examiner’s rejection of claims 1–15, 19–
29, 33–43, and 47–58 as directed to non-statutory subject matter.
Claims 16, 30, 44, and 5912
Claim 16 recites:
16. The process as claimed in claim 1, wherein said process
is a process of displaying a motion picture having a timeline
and a unique plot, comprising:
displaying a video representation of an actor acting as
said first character;
displaying a video representation of said actor indicating
said first character voluntarily entering a virtual reality;
displaying a video representation of said actor indicating
said belief by said first character that said first character is not
in virtual reality; and
displaying a video representation of an indication that
that an interaction in virtual reality between said first character
and said second character, while said first character has said

12 Appellant does not separately argue claims 16, 30, 44, and 59.
Appeal Br. 47–57; Reply Br. 5–7. We select claim 16 as representative.
Accordingly, claims 30, 44, and 59 stand or fall with claim 16. 37 C.F.R.
§ 41.37(c)(1)(vii).
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belief, causes said first character to labor for, at most, a
compensation substantially lower than a market value of said
first character’s labor.
Appeal Br. 81, Claims App.
As reflected above, claim 16 narrows claim 1 to “a process of
displaying a motion picture” and adds four “displaying” steps. While
narrower than the process recited in claim 1, the addition of these
“displaying” steps constitutes “insignificant postsolution activity,”13 which
does not transform the unpatentable abstract idea of relaying a story, as
recited in claim 1, into a patentable process. See Bilski, 130 S. Ct. at 3230
(“the prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity’”).14

13 Claim 16’s steps may also be considered an attempt to limit claim 1 to
a particular technological environment, i.e., displaying a motion picture that
relays a story. Regardless, the particular technological environment of claim
16 does not transform the unpatentable abstract idea of relaying a story into
a patentable process.
14 Appellant asserts that claim 16 is tied to a particular machine—a
video machine—and that it transforms video information/data into a visual
depiction. Appeal Br. 54–55. Even though claim 16 is directed to a process
of displaying a motion picture, no machine or apparatus is expressly recited
in the claim. Additionally, we are unconvinced that displaying a video
representation transforms a particular article into a different state or thing.
Even if we were to assume that claim 16 were tied to a particular machine
and that it recites a transformation of a particular article into a different state
or thing, we would nonetheless conclude that claim 16 is directed to non-
statutory subject matter because it recites insufficient postsolution activity,
which does not transform the abstract idea of relaying a story into a
patentable process.
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Accordingly, we sustain the Examiner’s rejection of claims 16, 30, 44,
and 59 as directed to non-statutory subject matter.
Claims 17, 31, 45, and 6015
Claim 17 recites:
17. The process as claimed in claim 1, wherein said process
is a process of creating a motion picture having a time line and
a unique plot, comprising:
providing a set;
providing a video camera configured to video at least a
portion of said set;
inciting an actor to act as said first character;
inciting said actor to indicate said first character
voluntarily entering a virtual reality;
creating a first video segment via said video camera by
filming said indication of said first character voluntarily
entering a virtual reality;
inciting said actor to indicate said belief;
creating a second video segment via a video camera by
filming said indication of said belief by said actor;
inciting said actor to indicate engaging in said
interaction;
creating a third video segment via a video camera by
filming said indication of said engaging by said actor;
editing and combining at least part of at least said first,
second, and third video segments to form a motion picture; and
storing said motion picture on an information storage
medium.
Appeal Br. 82, Claims App.

15 Appellant does not separately argue claims 17, 31, 45, and 60.
Appeal Br. 57–68; Reply Br. 5–7. We select claim 17 as representative.
Accordingly, claims 31, 45, and 60 stand or fall with claim 18. 37 C.F.R.
§ 41.37(c)(1)(vii).
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As reflected above, claim 17 recites a process of creating a motion
picture, and narrows claim 1 to the use of a video camera, and the steps of
providing a set, providing a video camera, inciting an actor to act a certain
way, creating and editing video segments, and storing the segments
combined as a motion picture on an information storage medium. The
question before us is whether the additional elements of claim 17 as
compared to claim 1, individually and as an ordered combination transform
the nature of the claim into a patent-eligible application.
Taking the claim elements separately, each step of the process is
“purely convention.” Alice Corp., 134 S. Ct. at 2359 (quotation omitted).
Using a video camera to create a video segment amounts to making a video
recording (or movie)—one of the most basic functions of a video camera.
See id. (noting that “[u]sing a computer to create and maintain ‘shadow’
accounts amounts to electronic recordkeeping—one of the most basic
functions of a computer”) (citation omitted); see also Planet Bingo, LLC v.
VKGS LLC, 576 Fed. Appx. 1005, 1008 (Fed. Cir. 2014) (holding the claims
ineligible even though they “require[d] ‘a computer with a central
processing unit,’ ‘a memory,’ ‘an input and output terminal,’ ‘a printer,’
[and] in some cases ‘a video screen’”).16 The same is true with respect to the
other steps of the claim—each of the providing, creating, inciting, editing,
and storing steps are “‘well-understood, routine, conventional activit[ies]’
previously known to the industry.” Id. (citing Mayo, 132 S. Ct. at 1294).17

16 Although nonprecedential, Planet Bingo is persuasive. Fed. Cir. R.
32.1; see Fed. R. App. Pro. 32.1(a).
17 We take Official Notice that these steps are well-understood, routine,
conventional activities previously known to the movie industry. MPEP

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Considered “as an ordered combination,” these steps “ad[d] nothing
. . . that is not already present when the steps are considered separately.” Id.
Viewed as a whole, claim 17 simply recites the concept of creating a movie.
The claim does not “purport to improve the functioning of” the video camera
or other device, nor does the claim “effect an improvement in any other
technology or technical field.” Id. at 2359–60 (citation omitted); see
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)
(reiterating the Supreme Court’s approach in Alice Corp). Thus, the
additional elements of claim 17 are “not ‘enough’ to transform an abstract
idea into a patent-eligible invention.” Alice Corp., 134 S. Ct. at 2360
(citation omitted).
Accordingly, we sustain the Examiner’s rejection of claims 17, 31, 45,
and 60 as directed to non-statutory subject matter.
Claims 18, 32, 46, and 6118
Claim 18 recites:
18. A program product for relaying a story having a timeline
and a unique plot involving characters, said product comprising
machine-readable program code for causing, when executed, a
machine to perform the process as claimed in claim 1.
Appeal Br. 82, Claims App.
As reflected above, claim 18 is drafted in what has become known as
Beauregard format, named for In re Beauregard, 53 F.3d 1583

§ 2144.03 (9th ed., Mar. 2014).
18 Appellant does not separately argue claims 18, 32, 46, and 61.
Appeal Br. 68–72; Reply Br. 5–7. We select claim 18 as representative.
Accordingly, claims 32, 46, and 61 stand or fall with claim 18. 37 C.F.R.
§ 41.37(c)(1)(vii).
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(Fed. Cir. 1995). CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1287 (Fed. Cir. 2013) (Lourie, J., concurring) (“Claims in Beauregard
format formally recite a tangible article of manufacture—a computer-
readable medium, such as a computer disk or other data storage device—but
such claims also require the device to contain a computer program for
directing a computer to carry out a specified process.”). For the same
reasons explained in CLS Bank Int’l, claim 18 is equivalent to the method it
recites (i.e., the method of claim 1) for § 101 purposes. Id. at 1287–88;
see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1266, 1375
(Fed. Cir. 2011) (holding that “the ‘computer readable medium’ limitation
. . . does not make the otherwise unpatentable method patent-eligible under
§ 101”).
Accordingly, for the reasons we explained in the context of discussing
the rejection of claim 1 supra, we sustain the Examiner’s rejection of claims
18, 32, 46, and 61 as directed to non-statutory subject matter.
We designate our affirmance of Rejection I as a NEW GROUND OF
REJECTION so as to provide Appellant with a full and fair opportunity to
respond to the thrust of the rejection because the reasoning upon which we
rely differs somewhat from the reasoning articulated by the Examiner.
Rejection II
The Examiner concludes that any movie recorded on a book or DVD
would have rendered the subject matter of claims 1–61 obvious to one of
ordinary skill in the art at the time of the invention. Ans. 15–19.
As discussed in the context of the new ground of rejection, claims 1–
61 each recite the term “indicating,” which we concluded is indefinite for
failing to particularly point out and distinctly claim the subject matter which
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Appellant regards as the invention. 35 U.S.C. § 112, second paragraph.
Thus, the prior art rejection under § 103(a) as applied to these claims must
fall, pro forma, because it is necessarily based on speculative assumptions as
to the scope of the claims. See In re Steele, 305 F.3d 859, 862-63 (CCPA
1962).19
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–61 under
35 U.S.C. § 101, and designate our affirmance as a NEW GROUND OF
REJECTION.
We REVERSE, pro forma, the Examiner’s decision rejecting claims
1–61 under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claims 1–61 as
indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

19 If Appellant elects to reopen prosecution, the Examiner should
consider whether the process claims (claims 1–17, 19–31, 33–45, and 47–
60) would have been obvious in light of prior art processes for relaying a
story (e.g., a process of writing a book, or recording or making a motion
picture) rather than obvious in light of a prior art product such as “a movie
recorded on a book or DVD” as the rejection currently stands.
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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